Shapeways, Etsy, Kickstarter, Meetup ask the White House to protect their users from trademark infringement claims

Oct 20, 2015 | By Tess

On September 1, 2015, the White House’s US Intellectual Property Enforcement Coordinator, Danny Marti, posted a notice titled “Developing the 2016-2019 Joint Strategic Plan on Intellectual Property Enforcement”. The notice was essentially a call for input from interested parties in regards to improving and advancing the United States’ intellectual property enforcement. With submissions for ideas having to be given in by last Friday, many interested parties are starting to make their ideas and submissions to the White House public.

Among the contributions garnering significant attention is a collaboration between some of the United States’ largest startups, including Etsy, Foursquare, Kickstarter, Meetup, and 3D printing service and marketplace Shapeways. Their collaborative input consisted of a call for the government to put in place a system or mechanism to protect their users from unwarranted trademark infringement allegations, allowing them to be challenged before content is removed.

What they are asking for is essentially the trademark equivalent of the DMCA, a legislative act that was passed which allows for copyright owners to request that companies or content publishers take down copyright infringing material. Crucially, what the DMCA also allows for is for individual users accused of copyright infringement to counter the claim, while the host website or platform is kept separate under a legal “safe harbor”. Currently, the law only applies to copyright infringement allegations, meaning that any third party or individual can made trademark infringement claims and have the content in question removed automatically.

The request lays out the following: “Abusive trademark enforcement…refers to the spurious assertion of trademark rights that arguably falls outside the scope of trademark protection. This may involve negligence - such as a misunderstanding of intellectual property law or the unintended by-product of an automated enforcement mechanism without adequate protection against false positives. Worse, however, the spurious complaint may be sent with the deliberate intent to exert unwarranted control over the free flow of information online. The rights holder may intend to undermine a competitor or to censor critical speech, for instance.”

The letter published by the heads of the five startups also includes some examples of likely unwarranted trademark abuse allegations, which include a request from a political action committee supporting Hillary Clinton to remove products parodying their logo, as well as the Republical presidential candidate Ben Carson requesting that merchandise with his name on it be removed.

Michael Weinberg

Michael Weinberg, the general council and intellectual property expert at Shapeways says, “Obviously, we’re companies, we care about this because it means that our websites are less vibrant places, but I think that a lot of this really does come out of frustration from seeing our users get these takedown requests that are kind of marginal and not being able to give them a way to pushback. Because they’re really passionate about being able to push back, but we, for a number of reasons aren’t able to jump into litigation over every marginal request, even if for the user it’s a huge request. It could be a huge part of their shop, or what they do on the site.”

If the White House takes their consideration seriously, the startups argue that the benefits of having safe harbor for not only copyright but for trademark infringement claims would include, “increased accountability, public awareness and uniformity of rules to address disputes - would create a stronger environment for creativity and innovation, while freeing up the resources to focus on enforcement of legitimate cases of infringement.”

While the companies involved must wait to see if their suggestion will be taken into account and put into legislation, they have nonetheless brought attention to a glaring gap in intellectual property rights laws that could affect many of us.